AOL Inc. v. Alexander Kay d/b/a Just My Link, Inc.
Claim Number: FA1102001373704
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is Alexander Kay d/b/a Just My Link, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aimchatrooms.org>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2011; the National Arbitration Forum received payment on February 18, 2011.
On February 18, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <aimchatrooms.org> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aimchatrooms.org. Also on February 18, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and found to be complete on March 8, 2011.
On March 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends, among other things, that:
Complainant is a global leader in the computer, entertainment and online services industries.
Complainant owns the trademark AIM, and others that incorporate the same mark, for use in its various online businesses, which include the operation of chat rooms and instant messaging (“IM”) services.
Complainant has registered the AIM mark with the U.S. Patent and Trademark Office (“USPTO”) (Reg. No. 2,423,368, registered January 23, 2001).
Complainant has provided its online services to Internet users since 2001.
Respondent registered the disputed domain name <aimchatrooms.org> in 2008 with the intent to profit from its use.
The contested domain name is confusingly similar to Complainant’s AIM mark.
Respondent is not licensed or otherwise authorized to use Complainant’s AIM mark in a domain name.
Respondent is not commonly known by the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent had at least constructive knowledge of Complainant’s rights in its AIM mark when it registered the disputed domain name.
The disputed domain name resolves to a website which displays advertisements for and links to the websites of Complainant’s commercial competitors.
Respondent receives click-through fees associated with the visits of Internet users to the linked websites.
Respondent registered and uses the disputed <aimchatrooms.org> domain name in bad faith.
B. Respondent
Respondent contends, among other things, that:
Respondent is a long time user of Complainant’s online services who set upon the creation of the subject domain name and resolving website while recuperating from a serious illness and seeking contact with the outside world.
Respondent’s intent in registering the <aimchatrooms.org> domain name was to create an independent link directory and to promote the use of simplified plain-text messaging.
Respondent had no commercial intent in registering the domain name, which is why it elected to adopt the “.org” top level domain.
Since becoming aware of Complainant’s objection to its use of the subject domain name, Respondent has removed from the resolving website symbols employed by Complainant in its business, and has also added content to emphasize non-affiliation with Complainant.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Respondent does not dispute that Complainant has rights in its AIM trademark for purposes of Policy ¶ 4(a)(i). It would, in any event, be futile for Respondent to do so in light of Complainant’s undenied registration of the mark with a national trademark authority in 2001, which registration predates Respondent’s 2008 registration of the disputed domain name. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”) (emphasis added); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent also does not deny that the disputed <aimchatrooms.org> domain name is confusingly similar to Complainant’s AIM trademark. Respondent’s silent concession of this point is confirmed by the fact that, in forming the domain, Respondent employed the mark in its entirety and merely added the generic term “chatrooms” and the generic top level domain (“gTLD”) “.org.” It is significant in this connection that “chatrooms” is explicitly descriptive of Complainant’s business done under the AIM mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the generic term “assurance,” to a complainant’s mark failed to differentiate the resulting domain name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to that complainant’s business). The “.org” top level domain is of no consequence to this discussion because a top level domain is required of every domain name. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that Respondent’s <aimchatrooms.org> domain name is confusingly similar to Complainant’s AIM trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <aimchatrooms.org> domain name. Once a complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to a respondent under Policy ¶ 4(a)(ii) to demonstrate its rights to or legitimate interests in a contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (“[C]omplainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.”) (emphasis added).
Complainant has made out a prima facie case under this head of the Policy. It falls then to Respondent to demonstrate that it nonetheless has rights to or legitimate interests in its domain name sufficient to satisfy the requirements of the Policy. We may examine Respondent’s assertions bearing on this issue by reference to the criteria set out in Policy ¶ 4(c).
Our first consideration in this connection is with regard to Complainant’s assertions that Respondent is not commonly known by the disputed domain name and that Respondent is not licensed or otherwise authorized to use Complainant’s AIM mark in a domain name. Respondent does not deny either of these assertions. Moreover, we observe that the WHOIS information for the subject domain name identifies the registrant only as “Alexander Kay d/b/a Just My Link, Inc.,” which does not resemble the domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the <aimchatrooms.org> domain name so as to have established that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com> where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next examine Complainant’s contentions that the disputed domain name resolves to a website which displays advertisements for and links to the websites of Complainant’s commercial competitors, and that Respondent receives click-through fees associated with the visits of Internet users to the linked websites.
To these assertions Respondents answers that its intent in registering the <aimchatrooms.org> domain name was merely to create an independent link directory and to promote the use of simplified plain-text messaging, and that Respondent had no commercial intent in registering the domain name. We find these protestations unpersuasive. While Respondent argues that it had no commercial intent in creating the disputed domain name and resolving website, it does not deny either that the site carries commercial content or that it derives income from the operation of the site. Indeed Respondent’s assertion of an intention to create an independent link directory to promote the use of simplified plain-text messaging is an apt description of the commercial objective it has pursued via the registration and use of the contested domain name. Because Respondent has employed a domain name which is confusingly similar to Complainant’s AIM trademark to achieve this for-profit objective, we conclude that this is not a bona fide use of the disputed domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or a fair use under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to a complainant’s customers, presumably receiving “click-through fees” in the process); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use).
We thus find that Respondent does not have rights to or legitimate interests in the contested domain name within the meaning of Policy ¶ 4(a)(ii).
Respondent attempts to excuse its registration and use of the disputed <aimchatrooms.org> domain name by suggesting that its motivation in creating the domain and resolving website was essentially social, i.e.: the desire to maintain contact with the outside world while recuperating from a serious illness. Yet Respondent does not deny that the content of the resolving website is commercial in character, or that the site advertises for commercial enterprises in competition with the business of Complainant, or that Respondent profits from its operation. In light of these undisputed facts, Respondent’s suggestion that it entertained no commercial motive in registering and using the contested domain name as alleged is distinctly disingenuous.
Respondent apparently uses the disputed domain name to obtain click-through or similar fees from the links displayed at the website resolving from the contested domain name. Because the disputed domain is confusingly similar to Complainant’s AIM trademark, Internet users are likely to become confused as to the possibility of an affiliation between Complainant and Respondent. This risk of confusion created by Respondent in an attempt to gain commercially is evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that a respondent’s use of a disputed domain name to maintain a pay-per-click site suggested bad faith registration and use of the domain under Policy ¶ 4(b)(iv)).
Furthermore, it is evident on this record that Respondent had actual knowledge of Complainant’s rights in the AIM trademark when it registered the disputed domain name. This is a further indication of Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”) (emphasis added); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that a respondent had actual or constructive knowledge of a complainant’s EXXON mark, so that that respondent must have registered a competing domain name in bad faith).
For these reasons, the Panel finds that Complainant has met the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <aimchatrooms.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 28, 2011
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